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In the cosmopolitan city of Barcelona, several of us,
including my colleague Alan
Behr, gathered for a private fashion industry
meeting at the exquisite Hotel El Palace. While sipping tea and sampling fine
pastries, we heard brief presentations on important legal developments from
around the world.

Owen Tse, a partner at Vivien Chan & Co. in Hong Kong,
presented on the New Balance case before the Intermediate Court in the People’s
Republic of China. The court ruled in favor of the Chinese company New Barlun,
which New Balance had accused of selling infringing footwear. The court relied
on the fact that New Barlun had filed the Chinese mark before New Balance had
made an attempt. To add insult to injury, the court awarded the equivalent of
US $15.8 million to New Barlun, which was subsequently reduced to the
equivalent of approximately US $700,000 by the Appeals Court. Owen also
reported an interesting fact—“Ivanka Trump” in Chinese was the subject of more
than 300 trademark applications in the PRC since 2016.

In addition, the practice of using “shadow companies” to
infringe the Chinese translation of well-known brand owner’s trademarks is on
the rise in Hong Kong. Infringers promote themselves by claiming they have
authorization or license from the shadow companies. Example: Pearl Bay vs.
Peony Bay in English and Chinese.

From Amsterdam, HerwinRoerdink of Vondst Advocaten gave a
presentation regarding fashion brand owners and European Union data protection
regulations. Herwin discussed the issue of smart products, such as socks that
collect running data of their wearers and golf shirts that track swings, all in
connection with EU privacy regulations. Specifically, a new EU privacy law,
GDPR, EU 2016/679, which will become effective on May 25, 2018, imposes heavier
regulation and more obligations on data controllers and data processors,
whether or not the data is processed in the EU. GDPR also applies to the
processing of data of those in the EU by non-EU entities that offer goods and
services that monitor behavior in the EU. Non-EU fashion brand owners who
target EU customers with monitoring products will therefore be subject to the
regulation.

Herwin also explained the differences between the approach
of the Dutch data protection authority and the United States Federal Trade
Commission regarding the permissibility of WiFi tracking by retailers. Although
the Dutch decision was based on Dutch implementation of the EU Privacy
Directive, which focuses on whether the processing is necessary to achieve the
desired purpose, the FTC decision was based on balancing the concern for
customer harm and the legitimate interests of the retailer.

From London, RolandMallinson of Taylor Wessing updated us
on the implications of Brexit to fashion IP, on the assumption that the United
Kingdom will not leave the EU before March 2019. Roland predicted that existing
European Union Trade Mark (EUTM) registrations will likely continue to be
recognized in the UK. He posited that parallel filing in the EU and UK is not
imperative now, especially if you are not yet using your mark in the UK. He
expressed confidence that there will be some arrangement by which current EUTM trademarks
and those being filed now will result in protection in the UK, from the current
priority date; however, because nothing is for certain, Roland recommended that
strategically key brands continue to file UK applications in parallel with any
new EUTM applications. For existing UK and EUTM registrations, it does not
automatically follow that a new UK application should be filed now – even for
strategically key brands.

The discussion also focused on the practical issue of
transferring 900,000 EUTM registrations to the UK system, a process made more
complex by the fact that a fair number of the registrations were not filed in
English. Some issues, like parallel imports and European design rights, have
political sensitivities.

In short, we had a very enjoyable and productive meeting.
And as anyone who attends the INTA annual meeting knows, half the pleasure for
us was being able to sit down while we networked with friends and colleagues.

Thank you to Phillips Nizer law clerk Candace
Arrington of
our Corporate & Business Law and Intellectual Property Law Practices for
providing assistance with the review and preparation of this blog post.

The views expressed in this document are solely the views of the author and not Martindale-Hubbell. This document is intended for informational purposes only and is not legal advice or a substitute for consultation with a licensed legal professional in a particular case or circumstance.

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